National Optics Institute (INO) – Innovation, Intellectual Property and the Patent Cooperation Treaty

From: Canadian Intellectual Property Office

The National Optics Institute (INO) is the largest optics and photonics centre of expertise in Canada and is among the top technological research centres in the world. As both a national and international leader in advanced technology, INO helps small and medium-sized enterprises and larger companies to improve their competitiveness.

During its more than 30 years in business, the company has implemented more than 6,500 solutions, carried out 74 technology transfers, and contributed to the creation of 35 new companies, creating more than 2,000 jobs. INO currently operates under 5 different business units, including:

The PCT assists applicants in seeking patent protection internationally for their inventions.

By filing one international patent application under the PCT, applicants can simultaneously seek protection in more than 150 contracting states.

INO's patents and the Patent Cooperation Treaty

INO started its operations in 1988 with a mission to bring innovations to life that enable the Canadian industry to be more productive and competitive.

INO's current intellectual property (IP) portfolio consists of more than 310 granted patents and nearly 90 filed patent applications, mainly in Canada and the United States (U.S.). The company filed about 25% of these applications using the Patent Cooperation Treaty (PCT). Although patents make up a significant portion of its portfolio, INO also has trade secrets, copyrights and trademarks, including a trademark for its corporation name.

INO's PCT experience

Filing PCT applications remains our preferred route for any invention. We do not want to limit ourselves to filing in Canada or the U.S., because we think that the market might also be important outside North America. Filing through the PCT has been a very positive experience. I would recommend it to other companies, especially for smaller [businesses].

Philippe Boivin, Vice-President, Corporate Affairs, INO

Key to success: implementing an IP management team

INO designed its IP strategy to meet business objectives and get the most value from its IP. The IP management team has been key to the success of the strategy, handling IP within the organization, meeting with entrepreneurs and consistently monitoring for opportunities.

"Our IP strategy is closely related to our business strategy. It's our bread and butter," says Philippe Boivin, Vice-President of Corporate Affairs at INO.

IP tips from INO

IP is crucial for the value of a company. Boivin says companies should take great care to maintain their IP and recommends implementing a rigorous and well-defined process for managing IP to improve efficiency. Here is what INO believes is key:

  1. Identify your IP assets (take inventory of what assets you have)
  2. Determine the best protection method (research patents, trade secrets, copyrights, industrial designs and trademarks)
  3. Find out how to monetize your IP (reflect on the best way to maximize the positive impacts of IP on revenues, competitiveness and reputation)
  4. Review your assets periodically (monitor things such as maintenance fees and the policing of your rights)
  5. Monitor the IP of others (avoid infringement by regularly reviewing others' IP)

"Nowadays it is quite easy to obtain information about IP. There are many free sources. For instance, the Canadian Intellectual Property Office (CIPO) website contains a great deal about IP [and many e-learning tools]," says Boivin.

Attending various conferences and seminars is a great way to stay up to date with IP policies and build on foundational knowledge. Boivin also recommends working with an IP professional such as a patent agent. Professional insight equips companies with the tools to make better-informed decisions and gives them a focused perspective.

Are you inspired to protect your products and ideas? Visit CIPO's IP Academy to learn more about IP!

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